DETAILED ACTION
Claims 1-20 are pending, and claims 1-7 are currently under review.
Claims 8-20 are withdrawn.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on 6/19/2026 is acknowledged.
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/19/2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tour et al. (WO2022/067111).
Regarding claim 1, Tour et al. discloses a method including steps of providing powder mixed together with a conductive additive within a reactor (ie. chamber), followed by applying a voltage across the powder mixture to recover metal from the powder mixture material through flash joule heating under inert conditions [0029-0031, 0223, 0247, fig.1]. The examiner notes that the aforementioned mixture of powder and conductive additives would naturally result in electrical and thermal contact between said powder and conductive additives.
Regarding claim 2, Tour et al. discloses the method of claim 1 (see previous). Tour et al. further teaches that the powder is obtained from grinding of electronic waste material [0016, 0037-0038].
Regarding claim 3, Tour et al. discloses the method of claim 1 (see previous). Tour et al. further depicts powder sizes much less than 100 micrometers such as approximately 5 micrometers [fig.34].
Regarding claim 4, Tour et al. discloses the method of claim 1 (see previous). Tour et al. further teaches subsequent acid leaching to recover rare earth elements [0062, 0074-075].
Regarding claim 6, Tour et al. discloses the method of claim 1 (see previous). Tour et al. further teaches that flash joule heating occurs by means of a voltage pulse of up to 1 second [0031, 0052].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tour et al. (WO2022/067111).
Regarding claim 3, Tour et al. discloses the method of claim 1 (see previous). Tour et al. broadly teaches that the powder size can be on the microscale, which overlaps with the claimed range [0039]. See MPEP 2144.05(I).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tour et al. (WO2022/067111) in view of either Yao et al. (2018, Carbothermal shock synthesis of high-entropy-alloy nanoparticles) or Song et al. (2021, Generation of high-density nanoparticles in the carbothermal shock method).
Regarding claim 5, Tour et al. discloses the method of claim 1 (see previous). Tour et al. does not expressly teach that the powders are uncompressed as claimed. Yao et al. teaches a similar method of carbothermal shock processing, wherein metal particles are obtained through applied voltage through a conductive surface/substrate upon which material to be processed is coated [p.2-3, fig.1]. The method of Yao et al. is disclosed to be a general route of processing particles with a wide range of applications [abstract, p.2]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Tour et al. by performing carbothermal shock on a conductive substrate instead of a conductive powder mixture for the aforementioned benefit of Yao et al. Alternatively, Song et al. also teaches a method of carbothermal shock processing wherein metal particles are obtained through applied voltage through a conductive surface/substrate upon which material to be processed is coated as a means of obtaining finely controlled particles [abstract, p.1-2, fig.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Tour et al. by performing carbothermal shock on a conductive substrate instead of a conductive powder mixture for the aforementioned benefit of Song et al. In either situation, the examiner notes that the disclosures of Yao et al. or Song et al. do not require compression between two electrodes such that the suggested disclosures of Yao et al. and Song et al. would result in uncompressed powders.
Claim(s) 1-4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (2022, Rare earth elements from waste) in view of Tour et al. (WO2022/067111).
Regarding claim 1, Deng et al. discloses a method including steps of providing powder mixed together with a conductive carbon black powder within a reactor (ie. chamber), followed by applying a voltage across the powder mixture to recover metal from the powder mixture material through flash joule heating [p.3]. The examiner notes that the aforementioned mixture of powder and conductive additives would naturally result in electrical and thermal contact between said powder and conductive additives.
Deng et al. does not expressly teach that the flash joule heating occurs in an inert or reducing environment as claimed. Tour et al. discloses performing flash joule heating of rare earth-containing waste material wherein gas conditions such as inert gas or reactive, reducing gases are known [0247]. The examiner notes that all the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to one of ordinary skill to modify the method of Deng et al. by utilizing a particular atmosphere (ie. inert or reducing as taught by Tour et al.) to obtain the predictable result of a flash joule heating process utilizing known and controlled atmospheres. See MPEP 2143(I)(A).
Regarding claim 2, the aforementioned prior art discloses the method of claim 1 (see previous). Tour et al. further discloses grinding the powder to achieve a fine powder size [0037-0039]. Therefore, it would have been obvious to modify the method of Deng et al. by performing a grinding step to achieve a find powder size as claimed.
Regarding claim 3, the aforementioned prior art discloses the method of claim 1 (see previous). Deng et al. further expressly depicts a powder having a size of less than 100 micrometers [fig.1d-f].
Regarding claim 4, the aforementioned prior art discloses the method of claim 1 (see previous). Deng et al. further teaches subsequent acid leaching to recover rare earth elements [title, p.3].
Regarding claim 6, the aforementioned prior art discloses the method of claim 1 (see previous). Deng et al. further teaches a processing time of 1 second or up to 2 seconds [abstract, fig.2c].
Regarding claim 7, the aforementioned prior art discloses the method of claim 1 (see previous). Deng et al. further teaches a processing temperature of stable heating at 1150 degrees C, wherein one of ordinary skill would understand reduction to at least partially occur within this range [fig.2c].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deng et al. (2022, Rare earth elements from waste) in view of Tour et al. (WO2022/067111) as applied to claim 1 above, and further in view of either Yao et al. (2018, Carbothermal shock synthesis of high-entropy-alloy nanoparticles) or Song et al. (2021, Generation of high-density nanoparticles in the carbothermal shock method).
Regarding claim 5, the aforementioned prior art discloses the method of claim 1 (see previous). The aforementioned prior art does not expressly teach that the powders are uncompressed as claimed. Yao et al. teaches a similar method of carbothermal shock processing, wherein metal particles are obtained through applied voltage through a conductive surface/substrate upon which material to be processed is coated [p.2-3, fig.1]. The method of Yao et al. is disclosed to be a general route of processing particles with a wide range of applications [abstract, p.2]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing carbothermal shock on a conductive substrate instead of a conductive powder mixture for the aforementioned benefit of Yao et al. Alternatively, Song et al. also teaches a method of carbothermal shock processing wherein metal particles are obtained through applied voltage through a conductive surface/substrate upon which material to be processed is coated as a means of obtaining finely controlled particles [abstract, p.1-2, fig.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing carbothermal shock on a conductive substrate instead of a conductive powder mixture for the aforementioned benefit of Song et al. In either situation, the examiner notes that the disclosures of Yao et al. or Song et al. do not require compression between two electrodes such that the suggested disclosures of Yao et al. and Song et al. would result in uncompressed powders.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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